| Thanks very much for posting here. I agree that the law needs to be changed. Instead of the burden of proof being on the examiner to prove obviousness -- which is basically impossible, as it's a subjective judgment -- I believe we should place the burden of proof on the applicant to show objective evidence of nonobviousness. 35 U.S.C. ยง 103 (http://www.law.cornell.edu/uscode/text/35/103) needs to be clarified to establish that the burden of proof falls on the applicant (during the application process) or plaintiff (in an infringement proceeding). We already have a pretty good list of some things that could constitute objective evidence of nonobviousness; see http://en.wikipedia.org/wiki/Graham_v._John_Deere_Co. [the trailing period is part of the URL]. To these we could add publication in a peer-reviewed journal or conference proceeding. I'm not necessarily suggesting that a patent couldn't be granted absent such evidence -- an applicant might reasonably argue that there has not yet been time for her invention to have enjoyed the commercial success that would constitute one kind of evidence. In any case, a granted patent should be annotated with the evidence provided; if the patent is later litigated, the court should review that evidence and allow additional evidence to be presented. If the evidence at the time of litigation were still insufficient, however, an infringement suit could not proceed. I think this requirement would not much affect most fields other than software. For a drug patent, for example, the applicant could simply list all the other molecular structures they tried that didn't have the desired properties. Most non-software patents have substantial R&D behind them; it would be sufficient to provide evidence of the work that was done. It would make a huge difference in software, though. Mere novelty would no longer be sufficient. There would have to be some objective reason to believe that another person, faced with the same problem, would have difficulty coming up with the same solution. I think this proposal addresses all three of your points. It would obviously increase the burden on applicants and patent holders. It would reverse the burden of proof on obviousness. And it would give the examiner -- and then the defendant, if the patent is litigated -- a powerful way to push back against the applicant/plaintiff. |